Tag: domain names

Despite their slow start, the new legal gTLDs, .’legal’ and .’law’, are full of opportunities

The new gTLDs focus in the legal field started some months ago, full of expectations and promised opportunities for law professionals. Domains like .law, .legal, .lawyer or .attorney were created in order to provide relevant, credible, and targeted TLDs for law firms, attorneys and other related business. However, they appear to have gotten off to a slow start, at least in the opinion of World Trademark Review.

According to a recent research carried out by this news platform, law firms are taking a “tentative approach” to their new gTLD digital space. For their analysis, worldtrademarkreview.com focused on the “54 law firms that are agents of the Trademark Clearinghouse, acting on the assumption that they are acutely aware of the ongoing gTLD rollout”. They wanted to know the percentage of them that had registered their domain, or a similar one, containing their brand name with any of the newest extensions .LEGAL (that operates as an open LDT) and .LAW. (only licensed lawyers can register).

Surprisingly, only a quarter of the sample studied registered the equivalent of their key domain name in either of the strings. To put this into numbers: a mere 28% of the law firms studied had registered a dot law domain name, while only 24% of them chose the dot legal extension. On the other hand, only 11% of those firms registered both strings.

Why is this surprising?

First of all because of the low number of registrations. .’legal’, that is owned by Donuts, went into general availability in March 2015 and so far has 6,500 registrations. On the other hand, .Law, which is owned by Minds + Machines, went into general availability on the 12th of October and has at this time only over 3,000 registrations. The other two bigger gTLDs, .’lawyer’ and .’attorney’, add up together to a total of 24,500 registrations. Even if the number per se doesn’t look bad for domains that have gone on sale quite recently, we have to consider that there are more than 1.2 million attorneys in the US alone.

Considering that .LEGAL is an open LDT, one would think that law firms would have chosen to secure their name to avoid it being purchased by third parties. If you have a law firm with an established brand, or if you are an attorney with an established name, you need to protect your assets and registering your firm’s name with one of these extensions is a very good investment which should be taken in order to protect yourself and your name.

However, we still think that the .Law registrations, even if there are a little more expensive than .Legal ones, are quite low. As we have seen .Law (and .lawyer and .attorney as well) requires a validation of legal credentials. This will not only create a sense of trust in your online visitors but the other idea behind it is to give a the search engines an additional trust factor (even though it is still very early to look for evidence of this).

In conclusion, what should a law firm or attorney pursue when registering its domain with one of this new gTLDs? First of all security, to protect your digital assets from cybersquatters, but also to build trust with potential customers. Most of these new suffixes are a great way to signal to clients and colleagues the presence of a serious legal professional behind it.

There’s a new gTLDin town, and get ready because it is a big one. Since last week, it is possible to register .SEX domains at registrars. With this new addition, ICM Registry, who operates already the same theme domains .XXX, .ADULT and .PORN, takes control of a new and lucrative TLD.

With over 300 million searches for sex-related topics a month (this is, approximately, the 30% of the total internet traffic), sex has become the most searched topic of the web and adult-only websites one of the biggest revenue generators. That’s not really a surprise, if we consider that most of internet user are adults and a high proportion of them consume, at some point, adult material. Given this, there’s no doubt that the demand for more virtual space for the adult industry will keep growing. The creation of this new top level domain .SEX, arrives in order to fulfil this insatiable demand.

However, it is expected that not only pornography and adult related sites will get use of this domain name. Also health and safety related websites and educational sites can benefit from it. Sites promoting safe sex or websites about sexual education can find in dot sex an effective way of reaching new audiences while facilitating the identification of these informational sites for users.

But… what does .SEX mean for the big brands out there?

Basically, loads of headaches. .SEX is a very appealing domain for those engage in Cybersquatting. So in order to protect their brand and avoid the misuse of the brand name by third parties, this companies need to be fast. And not only companies need to be careful with this, also individuals can also be considered as a ‘brand’. Let’s think about Taylor Swift, who not so long ago purchased TaylorSwift.porn and TaylorSwift.adult. in order to protect her name and brand. A good Digital Brand Protectionstrategy is essential nowadays.

So, with over 4.000 dot sex domains presold, we have to wonder, how many of them were actually bought by non erotic related big companies.

Over the past few weeks ICANN has caused quite a stir to businesses and trademark owners alike after announcing it was considering a proposal to force commercial registrants’ to display their identity when registering new domains.
This new proposal would see an end to commercial domain registrants’ ability to shield and hide their identity and rendering their registration details accessible on WHOIS platforms. It comes as no surprise that privacy campaigners are angered by the proposal.

ICANN released the ‘Initial Report on the Privacy & Proxy Services Accreditation Issues Policy Development Process’ on the 5th May, to allow for public comment on some of the points addressed. Some of the key questions raised in the report asked whether or not commercial entities registering domain names for economic and financial purposes should be exempt from privacy rights. Further questions examined what measures and policies would be required to enforce the contactability of the registrants. Furthermore, the report also asked to what extent should full WHOIS reference details be disclosed? The time frame for public comment ended on the 7th of July and at present we are waiting for press release on the report’s findings.

It comes as no surprise that many trademark owners are perturbed by ICANN controversial proposal. The digital landscape is fraught with potential threats to both personal and professional security. Many businesses enforce a policy of proxy registrations as an integral part of their brand protection strategy. The Online Abuse Prevention Initiative, a collective of activists for civil rights and internet anonymity, contend that the proposal would benefit and encourage cyber-criminals, online harassers and internet stalkers allowing them access to the personal details of women and LGTBQ campaigners. They argue it would deprive domain owners of their privacy and security. This type of activity, known as doxing allows confidential data of internet users to be exposed on the web.

Not all enterprises are put off by ICANN’s proposal. Naturally enough, the US entertainment industry is a strong supporter of the proposal as access to registration data will allow them to pursue copyright and trademark infringers with greater efficiency and cost-effectiveness. It would save the industry millions in legal enforcement. For the moment we will have to wait and see what decision ICANN will reach on this matter. Stay tuned for more updates.

There has been steady progress in the ongoing release of new gTLD’s. With ICANN’s shakeup of the digital landscape, the era of dot com dominance is possibly coming to a close. Optimising your domain portfolio will ultimately benefit your business. By protecting your brand, you can grow your business.

We’ve outlined below the newly available gTLD’s available for public registration for since June and July. Keep an eye out also for the upcoming new gTLD’s in August.

We were delighted to speak with Salvador Camacho – Attorney in the Social Welfare department of the Mexican Department of Social Security (IMSS). Salvador also has worked for one of the top Intellectual property firms in Mexico – Arochi & Lindner, specializing in IP Enforcement and protection and recovery of domain names for international clients before WIPO and NAF.

We asked him to discuss the topic of digital brand protection in the LATAM market.

Why is digital brand protection important in your professional opinion?

Digital brand protection nowadays is essential in order to develop a strong presence in the Digital Environment. Trademark owners are the principal victims of unlawful online activity regarding domain names such as cybersquatting, typosquatting and new illegal online conduct such as soundsquatting. This situation is not only affecting brands, but also users are nowadays victims of illegal conduct like malware or phishing.

In this context, a digital brand protection strategy not only protects trademarks owners but also their customers.

As an Intellectual Property specialist, what top tips would you give to trademark owners in the LATAM market on protecting their digital assets?

For different reasons, the LATAM market has been lagging behind in regard to the protection of digital assets. Nevertheless, intellectual property infringers have been developing an interesting and valuable market around those unprotected assets for years. In this context, the top tips that I would give are the following:

Search for professional advice in order to have a better understanding of the value of your digital assets and their subsequent protection.

Protect your trademark in every country that you are planning to offer your product or service.

Register gTLDs, ccTLDs and IDNs for your brand even before submitting the application for the trademark.

Have a strong presence on Social Media. This works not only to avoid fake profiles and bad reputation, but also presents excellent branding opportunities.

Be aware of the new gTLD’s launching. It is important to register your trademark as domain name before someone gets in there before you.

What common or frequent mistakes do you regularly see trademark owners making in the LATAM market?

The trademarks owners in LATAM are very interested in protecting their intangible assets before the Intellectual Property Governmental Authorities and that is truly important, but they are completely forgetting the Digital Environment. They are registering their trademarks in several countries but only registering one domain name, generally the .COM gTLD. In my experience, this is the biggest mistake from trademark owners in LATAM market regarding digital brand protection.

This situation has generated the proliferation of cybersquatted domain names on ccTLD strings. Therefore, when trademark owners seek to register their trademarks as domain names on ccTLD endings for digital branding purposes, they discover that somebody else has already registered it and is asking a 6 figure number for the domain. There are enforcement methods to recover the domain name, but they are more expensive than defensively registering a domain name. A proactive approach is a more cost-effective option.

What is your opinion of ICANN’s new gTLD program? Should it be viewed as a positive opportunity for scaling businesses who missed out on the .com era due to timing?

In 1974, the French writer Jacques Bergier gave some predictions of the future of telecommunications in his book named “The Planet of Impossible Possibilities”. I will quote him and say that ICANN’s new gTLD program is “The Planet of Infinite Possibilities” because it will change the way that we know, understand and use Internet.

This initiative definitively will affect the LATAM market, specifically for trademark owners, who believe that having just one domain name will suffice. According to SEDO’s new gTLD awareness report published on 2014, 75% of internet users are unaware of the new extensions.

As in any unexplored market, this early stage is an interesting opportunity for scaling digital brands. With extensions such as .LAT (Available on Sunrise period until April 16th) precisely focused on LATAM market, the prompt registration of trademarks as domain names is crucial to have a strong digital brand presence in LATAM Digital Environment.

In terms of controversial gTLD’s like .SUCKS or .FAIL do you think they should be made available to the public?

Actually, only trademarks registrations for .SUCKS are available. The Consumer advocate subsidy goes from $10.00 USD per year but it will be available until September and you will be unable to host a website. The Standard registration will be available on Sunrise period for $249.00 USD per year.

The actual controversy is related to the Sunrise Premium registration of trademarks registered in ICANN’s TMCH. Trademark owners will have to pay $2,499.00 USD per year, so companies like Apple and Yahoo already have bought their respective .SUCKS domains, in order to protect their trademarks. Some trademark owners are calling this business model extortion disguised as registration, but others are appealing to the legitimate right to sell the gTLD at the desired price.

As freedom of speech is one of the pillars of the Internet, I believe they should be made available to the general public. Furthermore, WIPO’s UDRP decisions have granted legitimate interests to owners of sucks or gripe domain names over trademark rights.

Finally, everyone that has been publishing articles for the past few weeks about this controversial gTLD has reached the same conclusion as me: If you don’t want to be a TRADEMARK.SUCKS, then just deliver a good product or service and try not to suck.

dotNice – Experts in digital brand protection

For more information on domain names registration and management email – brandprotection-emea@dotnice.com

There has been much talk over the last few years of the importance of digital marketing, how to create online marketing strategies, how to grow your online client base and following, how to build a brand’s online presence and how to conduct customer service via digital channels like twitter and Facebook. However there is very little conversation on the topic of how such brands’ can be protected once they have been established online. Businesses allocate massive marketing budgets to drive their digital presence. It would naturally make sense to safeguard your brand after so much capital has been invested. Some of the topics we shall be discussing over the coming weeks and months will cover the preventative measures your business can take to avoid such risks as brand reputation, revenue loss and of course legal litigation.

A key area of discussion over the next few months will focus on Domain Portfolio Management. Over the past year major developments and changes have rocked the world of domain names with ICANN , (Internet Corporation for Assigned Names and Numbers) releasing some 1,500 new domain names.
For instance, the music industry has just introduced .band as a new domain name available to online vendors. For yoga enthusiasts and teachers, the domain name .yoga was recently released; A plethora of new and unique domain names including .organic, .buzz, .beer even .wtf have recently been added to the domain name reservoir. This development can present great opportunities for brands endeavouring to expand and grow their online presence. It will allow enterprises to further develop targeted personalised marketing campaigns to new prospective clients and existing client bases. Needless to say, such transformations in the global domain registerary also possess threats to existing businesses. Opportunistic domain squatters may pre-emptively purchase a number of domain names that they imagine would hold equitable value to global brands. The news that Ashton Kutcher recently purchased a number of domain names for his baby daughter before she was even born, highlights the growing importance of reserving a domain name and also the growing awareness of online intellectual property. Brands must immediately consider how their domains are being managed, if at all!

Opportunities for cybersquatters are rapidly diminishing, because most businesses now know that securing domain names is a high priority. This has been happening many years and global brands are only now waking up to the extent of this problem. Companies that have won back their names from alleged cybersquatters following rulings from WIPO include Christian Dior, Nike, Deutsche Bank and Microsoft. Brands need to be aware of not only their current markets but also their potential markets. They need to protect themselves in both prospective future markets in addition to existing markets they currently operate in. Staying one step ahead is of critical importance.

Another issue our blog will discuss over the coming months is the problem of
Typo-squatting. Typo-squatting is similar to cybersquatting and is based on the probability that a certain number of Internet users will mis-spell or incorrectly type the name of a Web site (or actually its URL) when surfing the Web. For example, a common misspelling or a foreign language spelling. Back in 2006 to 2008, there existed an typo-squatted variant of Google listed as ‘goggle.com’. Landing on this fraudulent website would automatically cause the domain to download computer viruses and other destructive software including the dreaded antispyware program SpySheriff.

Another potential problem facing online brands is Phishing. Phishing involves opportunistic cybercriminals installing malicious software or stealing personal information off of your computer. Like fishing, cybercriminals essentially ‘Phish’ for important data through creating fraudulent email messages, websites, and phone calls. A highly publicised instance of this occurred in 2008 when an online fraudster claimed to be the renowned actress Scarlett Johansson and set up a fake competition whereby she ‘offered herself’ in a threesome with two of the competition winners. The object of the online imposter was to harvest email addresses of the unknowing competition participants.

Another fast evolving form of cyber-crime is brand jacking. Brand-jacking is a particular form of cyber crime whereby someone assumes the online identity of a person or brand with the intention of stealing the organisation or persons brand equity. An example of this happened to US Republican Sarah Palin and US President Barack Obama whereby falsified Facebook pages were created to damage their online presence. Furthermore, in 2006 a fake advert for a Starbucks Frappuccino was devised by an anonymous brand jacker who sought to damage the brands reputation. The objective was to highlight the contrast between consumption and poverty. Such parodies can ultimately destroy a brands equity as social media facilitates the rapid and viral dissemination of such fraudulent material.

In many cases the examples quoted above could be avoided if certain steps had been taken to carefully and thoroughly protect the brands listed. It often occurs that SMB’s and large corporations find themselves having to take costly legal action to fix what originally was a preventable problem. Enormous costs can be incurred if enterprises fail to implement and revise their digital brand protection strategy. In the year 2000, global brand Kodak won back its rights to kodak.ru after a long, tedious litigation process lasting a year and involving some twenty lawsuits. A further example of this occurred when multinational corporation Verizon won a $33 Million dollar lawsuit retrieving it’s domain name myverizonwireless.com from domain-quatters. These global brands had the financial means to pursue such costly litigation, many scaling brands establishing their online presence and scaling their business would not have such capital available.

Whether you’re an SMB or a large multinational, whether you work in the Tech industry or the entertainment industry, the same principles apply. Being prepared is key to guarantee your brands online presence and digital footprint is safeguarded.

Google won another UDRP case seeking to obtain the transfer of one domain name. The company submitted the complaint with the National Arbitration Forum on August 20,2014.
The disputed domain name is: Googleekip.com.
Google owns many trademark registrations for the “Google” mark all over the world. Therefore,it is more than obvious that the disputed domain name is confusingly similar to its trademark.Moreover,the company managed to demonstrate that the respondent has no rights or legitimate interest in the disputed domain name and that the respondent used the domain name in bad faith .
The arbitrator assigned to the case ruled in favor of Google,indicating that the company has full rights to the disputed domain name .The respondent’s loss was also partly due to the fact that he failed to submit a response in this proceeding ,accepting these way Google’s allegations as fact .
You can read the decision here.

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